Ethical Issues: Staying in the Frying Pan and out of the Fire

On tap this afternoon at the BIO IP Counsel Meeting is ethics. There are two separate panels schedule, the first which will address the ethical issues associated with joint inventorship and joint representation. The second panel dealing with ethical issues as they present particularly for in-house IP counsel.

The moderator of the first panel is Donald Ware of Foley Hoag, who is leading a discussion of pitfalls that may arise from prosecuting joint inventions conceived in the course of research collaborations among multiple institutions, including companies, universities and hospitals. On the panel is Irene Pleasure, Associate General Counsel and Director of Patent Law at Genentech, who discussed the in-house perspective on managing patent issues in research collaborations. Rounding out this first panel discussion of the afternoon will be David Hricik, Professor of Law at Mercer University School of Law and co-author of two patent ethics treatises, namely Patent Ethics – Prosecution (2009) and Patent Ethics – Litigation (2010). Hricik, who is also on the second panel, addressed the professional responsibilities of patent attorneys involved in the prosecution of jointly-owned patent applications.

In the situation where there is a joint research collaboration everything is fine, people are happy and hope springs eternal right up until that moment when everything falls apart. Then you have issues associated with a law firm representing inventors of a joint collaboration might be conflicted out of the representation altogether because downstream patent applications filed by one or more of the collaborators creates a situation where the collaborators no longer have jointly aligned interests, perhaps as the result of double patenting issues. Ware explained several cases arising out of a common set of facts whereby multiple joint collaborators were not consulted on the filing of a joint application (or at least not enough to their liking), which created a double patenting issue for an after filed application. The law firm representing the collective was sued for malpractice and breach of fiduciary duty; the case settled. The primary case also settled among and between the once happy joint collaborators, which doesn’t necessarily create the legal lessons we can learn from but certainly creates a life lesson on how everything is fine until there is a problem. It is always better to get adequate legal advice on the front end so that the likely occurrences of after developed IP ownership can be adequately addressed while the parties are still friendly.

One of the things that Pleasure spoke about was various risk mitigation strategies for protecting against ethical and ownership issues that arise from joint collaborative endeavors. These include:

Limiting in the type of research to “non-profit” or “non-commercial” research

Restrict the University’s ability to authorize clinical research or comparative research

Attach a MTA with the agreement and ask the University to notify the Company when material is transferred

Include non-exclusive license back provisions so that the Company obtains rights in the event an invention results from the use of the material

Use Master Agreements

The take-away point is that from the Company perspective particular care needs to be taken, with appropriate time invested, to manage joint collaborations from the outset to envision those things that are foreseeable. Also clear is the need to continually refine practices, and agreements, as lawsuits are filed, even when they are settled. Best practices mandates a proactive approach to managing these relationships.

Professor Hricik then took the podium to discuss client identity issues. This arises directly in the scenario where one party is “primarily responsible” for preparing, filing and prosecuting any patent applications and they are required to consider the input from collaboration partners. In this scenario it is critically important for the lawyers to communicate clearly in an unambiguous way the substance of the relationship. While you may be required to accept input from joint collaborators those joint collaborators who have a right of input are they your client? In the first instance it is probably best to assume those with a right of input are not your client.

Hricik pointed out that in almost all of the situations the answer about what you can do ethically depends upon whether you represent the collaborators jointly, or whether you represent only one party, likely the party obligated to prepare and file the patent application. It is, therefore, critical for attorneys to read the agreement between the collaborators to determine who the client is. Simple enough, but with ethical issues there is no way to over emphasize the importance of knowing who your client is because in these types of situations divergent interests at some point is a real and tangible possibility. That is why explicit agreements that define for all collaborators your role and who you own a duty to is essential.

In the last panel of the day, Professor David Hricik is joined by Barbara Fiacco of Foley Hoag, and together they discussed developments in ethics law for inhouse IP counsel, including law firm conflict issues, how to protect the attorney-client privilege, ethical dilemmas created by 21st century social media, in-house counsel ethical pitfalls, and recent developments in IP malpractice law. The panel discussion employed a game-show format, with the audience being provided clickers to submit responses. BIO is in the process of requesting CLE Ethics credit, so I am keeping my fingers crossed. I always have way more credits than I can use in any given year, or over two years, but those pesky ethics credits can be difficult to come by.

The game show format proved very engaging and presented perhaps the most interesting ethics presentation I have ever attended. Given that lawyers ethics largely relate to lawyers regulating lawyers it is always interesting to hear what other attorneys think. I was also great to hear the cases behind the fact patterns, which Professor Hricik admirably went through in an engaging manner.

To give you an idea about the questions, the first question deal with whether you are on LinkedIn, Facebook, both or neither. Out of the attendees 44% on both Linkedin and Facebook, with 33% on LinkedIn only. The next question asked whether you are linked with a judge on Facebook, and only 7% said yes. This lead to discussion of whether attorneys can ethically “friend” a judge on Facebook. To this question 33% said yes, 14% said no and 53% said it depends. Depends became a popular answer, with Hricik explaining: “If it is an ethics question and it is multiple choice the answer is usually ‘it depends.'” According to Hricik, in Florida you cannot be a friend with the judge on Facebook if you have a case in front of them. So be careful if someone in your firm is a “friend” with a judge in Florida and someone in your firm has a case in front of that judge, you could be looking at a motion to get you kicked off the case.

As the day now ends and we proceed to a dinner reception at Space Needle I can say I thoroughly enjoyed the day, the presentations were uniformly excellent, and you should have been here!

ACKNOWLEDGEMENTS

My presence at the BIO IP Counsels Committee Conference has been facilitated thanks to BIO and the Practising Law Institue. I would like to thank BIO for providing me media access and privileges to the event, and for working to facilitate an exclusive interview with Erik Iverson of the Bill and Melinda Gates Foundation, who will provide the keynote address. I would also like to thank PLI, our major sponsor at IPWatchdog.com, for underwriting my travel expenses. Thanks to the generous support of PLI we have been able to engage in news gathering activities coast to coast.

The Author

Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. He has worked with independent inventors and start-up businesses in a variety of different technology fields, but specializes in software, systems and electronics.

Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit.

Gene is a graduate of Franklin Pierce Law Center and holds both a J.D. and an LL.M. Prior to law school he graduated from Rutgers University with a B.S. in Electrical Engineering.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 1 Comment comments.

Paul F. MorganApril 16, 2011 10:11 am

The above is only one of the many problems caused by “jointly owned” patents.

Question: Would you readily set up a joint bank account with other people who are no relations of yours, and put large amounts of your money into that joint account?

I’m sure you answer would be no, because you know that anyone named on a joint bank account (absent any other agreement) can do anything they want with it, including taking out all your money and freely using it themselves or giving it away.

Yet that is precisely the same legal situation as patent applications filed with joint inventors from different companies with no contrary agreement, OR with an agreement for joint ownership.

Joint ownership of PATENTS is actually MUCH WORSE than this.

First, because NONE of the joint owners of a patent can even sue any infringer unless ALL the joint owners joint in the lawsuit, and only if NONE of them have sold the infringer a license or release.

Secondly, because unless ALL the true inventors are properly named on a joint application, the entire patent is INVALID, unless corrected. [If a true joint inventor is left off the patent deliberately, that is uncorrectable, and that conduct may also constitute a fatal Rule 56 and/or fraudulent oath defense and/or PTO disciplinary action.]

Thirdly, because even if a true joint inventor was left off a patent, he or she can still grant valid, cheap, licenses to any infringer.

Fourthly, because there are serious professional ethics and corporate legal exposure issues for a patent attorney for one company to legally represent inventors from another company, much less making major prosecution, claim abandonment, or fee non-payment decisions, without covering agreements of all the affected joint owners.

Fifthly, because the situation in foreign countries for the equivalents of those jointly owned U.S. patents is different and hence adds even more complications.

HENCE, absent a detailed joint agreement covering all of the above issues, with all of the respective inventor’s company’s, Joint Ownership of patents can easily result in effectively unenforceable, unlicensable, and thus worthless, patents, plus the possibility of lawsuits.

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